DIAM CONCEPT

Patent Trials and Appeals Board

Feb 2, 2022

2022001223 (P.T.A.B. Feb. 2, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/619,741 12/05/2019 Alix GICQUEL APIC-61868 6698 86378 7590 02/02/2022 Pearne & Gordon LLP 1801 East 9th Street Suite 1200 Cleveland, OH 44114-3108 EXAMINER MILLER, JR, JOSEPH ALBERT ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 02/02/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALIX GICQUEL, OLIVIER DUIGOU, and THOMAS BIEBER Appeal 2022-001223 Application 16/619,741 Technology Center 1700 Before CATHERINE Q. TIMM, GEORGE C. BEST, and JENNIFER R. GUPTA, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4, 8, and 12-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Diam Concept. Appeal Br. 2. Appeal 2022-001223 Application 16/619,741 2 CLAIMED SUBJECT MATTER The claims are directed to a method for monitoring the growth conditions of synthetic diamond as it is deposited in a microwave plasma- assisted deposition process. See, e.g., claims 1-3; Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for monitoring growth conditions of a microwave plasma-assisted deposition for diamond manufacture according to microwave-assisted plasma deposition parameters, said method being implemented by a monitoring device comprising a digital camera and at least one processor and memory, said method including the steps of: - capturing a digital color image of at least one growing diamond layer, using the digital camera, - extracting color characteristic values from at least one area of the captured digital image, by the at least one processor, - storing in the at least one memory the extracted color characteristic values associated with respective measurement time indications and the growth conditions, - analyzing, by the at least one processor, the extracted color characteristic values to detect a deviation of the growth conditions during the microwave plasma-assisted deposition, - determining new values of microwave-assisted plasma deposition parameters based on the deviation of the growth conditions, and - modifying, by the at least one processor, the plasma assisted-deposition parameter values of the diamond manufacture to be the new values of microwave-assisted plasma deposition parameters. Appeal Br. 15 (Claims Appendix). Appeal 2022-001223 Application 16/619,741 3 REJECTIONS Claims 1-4, 8, and 12-26 are rejected under 35 U.S.C. § 101 as lacking patent eligibility. Claims 1-4, 8, 15-18, 21-23, and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Grotjohn (US 2017/0271132 A1, published Sept. 21, 2017) in view of Kazahaya (US 2006/0216515 A1, published Sept. 28, 2006) and Misra (WO 2014/035344 A1, published Mar. 6, 2014).2 Claims 12, 14, 19, and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Grotjohn in view of Kazahaya, Misra and further Lemelson (US 5,871,805, issued Feb. 16, 1999). Claims 13, 20, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Grotjohn in view of Kazahaya, Misra, and further Moslehi (US 5,446,825, issued Aug. 29, 1995). Claims 12-14, 19, and 20 are rejected under 35 U.S.C. 112(b) as indefinite.3 OPINION Obviousness We begin by discussing the obviousness rejections. The Examiner rejects claims 1-4, 8, 15-18, 21-23, and 26 as obvious over Grotjohn in view of Kazahaya and Misra. Final Act. 6. The Examiner adds further references to reject dependent claims. Final Act. 9-10. Appellant’s arguments focus on the Examiner’s rejection of claims 1- 3 and, in particular, on the Examiner’s findings relating to the capturing and 2 The Examiner lists claims 5 and 6 as rejected, but those claims have been canceled. Thus, we do not list those claims. 3 The Examiner withdrew the § 112(b) rejection of claims 16 and 21. Ans. 3. Appeal 2022-001223 Application 16/619,741 4 extracting steps of those claims. Appeal Br. 11-14. The dispositive issue is the same for all the claims and rejections and it will suffice for us to address the issue as it relates to claim 1. We fashion the issue as: Has Appellant identified a reversible error in the Examiner’s finding of a suggestion within Kazahaya and Misra to use a camera that captures a color image in Grotjohn’s method? Appellant has not identified such an error. There is no dispute that Grotjohn teaches a method of monitoring the growth conditions, such as surface roughness and nature of the roughness, during diamond deposition in a microwave plasma-assisted chemical vapor deposition process. Grotjohn ¶ 6. The monitoring involves scanning a coherent laser light beam across the diamond surface and capturing the reflected/scattered light using a focal plane array (or a camera directed at the image on a surface). Grotjohn ¶ 7. Appellant contends that “Grotjohn [0007] only describes scanning a diamond surface with a coherent laser light, which does not produce a color image.” Appeal Br.11; see also Reply Br. 5 (“Grotjohn only describes scanning a diamond surface with a coherent laser light, which does not produce a color image and is not with a digital camera.”). But this argument is not persuasive of reversible error because the Examiner does not rely on Grotjohn’s laser as the device capturing the image, the Examiner finds that Grotjohn’s focal plane array or camera (Grotjohn ¶ 7) captures the image. Final Act. 6. Grotjohn does not further identify the specifics of the camera, but instead states that the light detection means “is not particularly limited.” Grotjohn ¶ 50. The Examiner applies Misra as evidence that it was known in Appeal 2022-001223 Application 16/619,741 5 the art to use cameras to measure color data during the formation of diamond by microwave assisted CVD. Final Act. 6-7. Appellant does not dispute this finding. Appeal Br. 11-13. Misra uses a high fidelity camera to record both images and videos. Misra 7-8. Using a color digital camera to capture the light reflected/scattered from a laser follows from the teachings of Grotjohn and Misra. Although most of Appellant’s arguments focus on Kazahaya’s teachings, we do not find it necessary to discuss Kazahaya as the teachings of Grotjohn and Misra sufficiently support the Examiner’s conclusion of obviousness. Appellant has not identified a reversible error in the Examiner’s obviousness rejections and, thus, we sustain them. Eligibility Next we turn to the Examiner’s 35 U.S.C. § 101 rejection. The Examiner rejects claims 1-4, 8, and 12-26 under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Final Act. 2. Appellant confines their arguments to the rejection of claims 1-3 and the issue is the same for all the claims. We select claim 1 as representative to resolve the dispositive issue on appeal. We fashion the issue as: Has Appellant identified a reversible error in the Examiner’s determination that the claim fails to integrate the abstract idea into a practical application and recite significantly more such that an article is transformed into a different state or thing? Appellant has not identified such an error. Appeal 2022-001223 Application 16/619,741 6 The Examiner followed Office guidance (Manual of Patent Examining Procedure (MPEP) §§ 2103-2106.07(c), 9th ed., rev. 10.2019) in rejecting the claims, and we adopt that reasoning and the Examiner’s response to Appellant’s arguments. We add the following for emphasis. There is no dispute that, as found by the Examiner, claim 1 recites a method falling within the mental process grouping of abstract ideas as it recites steps that can be performed in the mind but for the recitation of generic computer components. Compare Final Act. 2-4 and Ans. 12-15, with Appeal Br. 7-8 and Reply Br. 2-4. In addition to reciting mental process steps, claim 1 recites the use of a camera to gather a digital color image, the use of a generic computer processor to extract data (color characteristic values, which, according to the Specification, can take many forms including values of hue, saturation, brightness, brilliance, or coded colors (Spec. ¶ 40)) from the image, the use of generic computer memory to store the extracted data (storage not required by claims 2 and 3), using the processor to analyze the data to detect a deviation of the diamond growth conditions (these growth conditions being wide ranging and including pressure, temperature, power, flow rates, composition, etc. (Spec. ¶¶ 24-25)), using any means to perform a step of determining new deposition parameters (same or similar to growth conditions (Spec. ¶ 24)), and using the process to modify the deposition parameter values to the new values, i.e., update the process parameters. The camera merely gathers data for use in feedback control and the feedback control process is not specific to any particular control process, but encompasses monitoring any growth conditions of the microwave-assisted plasma deposition and updating any of the process parameters. Appeal 2022-001223 Application 16/619,741 7 The Examiner determines that the abstract idea is not integrated into a practical application as the additional elements, i.e., the camera, processors, and memory, are generic and perform generic functions such that they do not impose any meaningful limits on practicing the abstract idea, and the claims do not include additional elements sufficient to amount to significantly more than the abstract idea. Final Act. 2-4. Appellant contends that the step of “modifying, by the at least one processor, the plasma assisted-deposition parameter values of the diamond manufacture to be the new values of microwave-assisted plasma deposition parameters” recited in claim 1 “constitutes an integrated practical application of the alleged abstract idea and directs the claims to be significantly more than mere mental process because it amounts to a transformation.” Appeal Br. 7; Reply Br. 2. We do not agree with Appellant that updating data on the processor is the type of practical application that amounts to an integrated practical application or that directs the claim to significantly more than the abstract mental process steps. Appellant’s claim 1 is directed to all manners of monitoring any growth conditions according to any deposition parameters using digital color images from a camera and which places modified data on a processor. “What is claimed is simply a generic environment in which to carry out the abstract idea.” Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021). In other words, the recited hardware merely serves as “a conduit for the abstract idea.” In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). Nor is the claim limited to a specific technical solution for accomplishing monitoring. Appellant’s claims fail to recite a practical way Appeal 2022-001223 Application 16/619,741 8 of applying an underlying idea and are instead drafted in such a result- oriented way that they amount to encompassing the “principle in the abstract” no matter how implemented. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018); see also Mayo Collaborative Servs., 566 U.S. 66, 82 (2012) (“[S]imply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.”). Appellant has not identified a reversible error in the Examiner’s determination of patent ineligibility. Indefiniteness Lastly, we turn to the Examiner’s rejection of claims 12-14, 19, and 20 under 35 U.S.C. § 112(b) as indefinite. Appellant argues claims 12 and 19 as a group, claims 13 and 20 as a group, and claim 14 separately. Appeal Br. 8-10. Thus, we consider these groups separately. Claims 12 and 19 Claims 12 and 19 depend from claims 1 and 2, respectively, and each further requires a step of comparing values of extracted color characteristics with reference color characteristics. These claims limit the comparing step to one “based on a model trained on a set of reference data and configured to predict optimal parameter values of the deposition assisted by plasma microwave.” Claims 12, 19. The Examiner determines that the “based on a model” language is indefinite. Specifically, the Examiner states that: Claims 12 and 19 require comparing values wherein the comparing is “based on a model” but the model is not disclosed Appeal 2022-001223 Application 16/619,741 9 and therefore there is no particular measure of how the values are determined or compared based on the model. Furthermore, there is no clarity how the model predicts optimal values or how it is “configured” to do so. Final Act. 5. Appellant contends that the Examiner “improperly conflates breadth with indefiniteness” and that the Examiner never alleges “that the claim language itself is unclear.” Appeal Br. 8-9. The Examiner responds by stating that “there are no clear metes and bounds to the model actually being claimed.” Ans. 15. The Examiner adds that the Specification is of little help because although the Specification lists a number of different types of models that could be used (i.e. neural network, Kernel, Multiple kernel learning, etc. (Spec. ¶ 54)), it provides no guidance as to the particular model application used or how it is applied to come up with the claimed “optimal parameters.” Ans. 15-16. We understand the Examiner’s rejection to be based on a lack of algorithmic structure in the Specification associated with a model having the function recited in claims 12 and 19, i.e., “a model trained on a set of reference data and configured to predict optimal parameter values of the deposition assisted by plasma microwave.” Appellant’s argument does not persuade us that the Examiner erred in making this rejection. To be definite, “the structure required for ‘computational means’ . . . must be an algorithm-a sequence of computational steps to follow-that must be found in the specification.” Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013). Although the Specification discloses using “comparison, classification, or learning models such as: neural network, Kernel, Multiple Appeal 2022-001223 Application 16/619,741 10 kernel learning, Support vector machine, decision trees, logistic regression, multiple regression, nearest neighbor method, and/or random forests” (Spec. ¶ 54), how the model is “configured to predict optimal parameter values” is not explained, i.e., no algorithm for so configuring the model is described in the Specification. Granted, there is a description of using known models and that is an algorithmic structure and for a claim to be definite, the recited algorithm “need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan,” but there is no persuasive evidence here that the structure required to configure the model as required by claim 1 is understandable to the ordinary artisan who would be implementing the model. In the absence of such evidence, a preponderance of the evidence supports the Examiner’s determination of indefiniteness. Claims 13 and 20 Claims 13 and 20 depend from claims 1 and 2, respectively, and each further requires a step of “constituting a database.” These claims specify that the database contain information “for a multitude of microwave plasma- assisted deposition experiments” and further specify that the information is selected from “values of the deposition parameters, values of color characteristics, the measurement time of these values, a quality of the diamond obtained, and a reference of the deposition experiment.” The Examiner determines that the step of “constituting a data base” is indefinite because “there is no liaison to the base claims as how the claimed data base impacts the process” and “[i]t is required that there is a data base that has information but no further guidance on the claimed process.” Final Act. 5. Appeal 2022-001223 Application 16/619,741 11 Appellant contends that the Examiner improperly conflates breadth with indefiniteness. Appeal Br. 9. The Examiner responds by asserting that the information required in the claims is vague for a number of reasons. According to the Examiner, The information required in claims 13 and 20 is vague - it requires a database but there is no description how the database is used. Further, there are a number of different options that optionally are included in the database. One of the pieces of information is selected from “a reference of the deposition experiment” yet there is no description as to what the experiment is or to what ‘reference’ even refers. As per 12 and 19, the information applied in the database is operably limited only to said reference, and one of ordinary skill would have no concept of the metes and bounds of the data in the database, much less how it is applied to the model or the process. Ans. 16. We agree with Appellant that the Examiner has not adequately supported the determination of indefiniteness as it pertains to the language of claims 13 and 20. Appeal Br. 9-10. The problem here is that the Examiner has not performed the proper analysis. To support a rejection based on indefiniteness, the Examiner must provide Appellant with “a well-grounded identification of clarity problems.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The proper test is whether the claims, “read in the light of the specifications, reasonably apprise those skilled in the art both of the utilization and scope of the invention.” Id. The Examiner’s rejection does not identify how the claim lacks reasonable precision and how the claims fail to reasonably apprise the skilled artisan of their scope. Appeal 2022-001223 Application 16/619,741 12 First, the statement that “there is no description of how the database is used” does not explain how the claim language is vague such that it fails to reasonably apprise the artisan of the scope of the claimed database. Claims 13 and 20 set forth a Markush group from which the information is selected. The Examiner has not made it clear how the failure to describe the use of the database makes the information within the database vague or unclear. Second, the fact that the claim discloses a Markush group of options does not itself make the claim indefinite. Third, the Examiner’s analysis as to one of the options, i.e., “a reference of the deposition experiment” is flawed. The claims must be read in the context of the Specification and the Specification describes reference values and reference microwave plasma-assisted deposition experiments. Spec. ¶ 52 (“[T]he reference value can be, for example, a value previously measured in the same experiment, or a value obtained in a previous experiment.”); Spec. ¶ 53 (“The method according to the invention may also include a step of comparing the values of the color characteristics determined with the values of the same color characteristics obtained from reference microwave plasma-assisted deposition experiments.”); Claim 12. The Examiner’s statement that “there is no description as to what the experiment is or to what ‘reference’ even refers” is incorrect. Claims 13 and 20 are indefinite because they depend from claims 12 and 19, respectively, but the Examiner has failed to support the determination that the further language in these claims is indefinite. Thus, we sustain the rejection only on the basis of the reasoning presented against claims 12 and 19. Appeal 2022-001223 Application 16/619,741 13 Claim 14 Claim 14 depends from claim 12. Claim 14 further requires “the prediction of the optimal parameter values of the deposition assisted by plasma microwave” be “based on data sets containing information on values of the deposition parameters, values of color characteristics, the measurement time of the values of the deposition parameters and/or the color characteristics, and an obtained quality of the diamond.” The Examiner rejects claim 14 as indefinite “because there is no clear direction as to the exact information provided but further how the prediction is based on the data.” Final Act. 5. Appellant contends the Examiner has again conflated breadth with indefiniteness. Appeal Br. 10. The Appellant explains that “the specific information provided and the manner in which the prediction is performed relate to specific embodiments” and the Examiner’s allegation “says nothing about the clarity or meaning of making a prediction.” Id. The Examiner responds that “due to [Appellant’s] lack of providing any direction whatsoever, the breadth is equivalent to indefiniteness, as one would not know how the prediction relates to/is based on the data.” Ans. 16. The limitations of claim 14 attempt to further limit the algorithm of the “model” recited in claim 12 and for the reasons the Examiner provided to reject claim 12 as indefinite, claim 14 is also indefinite. Claim 12 requires a step of comparing “based on a model trained on a set of reference data and configured to predict optimal parameter values of the deposition assisted by plasma microwave.” Claim 14 limits “the prediction of the optimal parameter values.” Thus, clam 14 further limits the configuration of the model and specifically, the prediction must be “based Appeal 2022-001223 Application 16/619,741 14 on data sets containing information on values of the deposition parameters, values of color characteristics, the measurement time of the values of the deposition parameters and/or the color characteristics, and an obtained quality of the diamond.” As we pointed out above, to be definite, “the structure required for ‘computational means’ . . . must be an algorithm-a sequence of computational steps to follow-that must be found in the specification.” Ibormeith, 732 F.3d at 1379. There is no persuasive evidence here that the structure required to configure the model as required by claims 12 and 14 is understandable to the ordinary artisan who would be implementing the model. In the absence of such evidence, a preponderance of the evidence supports the Examiner’s determination of indefiniteness. CONCLUSION The Examiner’s decision to reject claims 1-4, 8, and 12-26 is affirmed. More specifically, The rejection of claims 1-4, 8, and 12-26 under 35 U.S.C. § 101 is affirmed. The rejection of claims 1-4, 8, 15-18, 21-23, and 26 under 35 U.S.C. § 103 as being unpatentable over Grotjohn in view of Kazahaya and Misra is affirmed. The rejection of claims 12, 14, 19, and 24 under 35 U.S.C. § 103 as being unpatentable over Grotjohn in view of Kazahaya, Misra, and Lemelson is affirmed. Appeal 2022-001223 Application 16/619,741 15 The rejection of claims 13, 20 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Grotjohn in view of Kazahaya, Misra, and Moslehi is affirmed. The rejection of claims 12-14, 19, and 20 under 35 U.S.C. § 112(b) as indefinite is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 8, 12- 26 101 Eligibility 1-4, 8, 12- 26 1-4, 8, 15- 18, 21-23, 26 103 Grotjohn, Kazahaya, Misra 1-4, 8, 15- 18, 21-23, 26 12, 14, 19, 24 103 Grotjohn, Kazahaya, Misra, Lemelson 12, 14, 19, 24 13, 20, 25 103 Grotjohn, Kazahaya, Misra, Moslehi 13, 20, 25 12-14, 19, 20 112(b) Indefiniteness 12-14, 19, 20 Overall Outcome 1-4, 8, 12- 26 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2022-001223 Application 16/619,741 16 AFFIRMED